Anuj Desai

Biography

Anuj is a partner in the Intellectual Property practice. As an intellectual property lawyer with a hybrid practice encompassing both transactional matters and litigation, Anuj is trusted to manage, safeguard, and resolve disputes involving a variety of creative assets. He delivers strategic and practical advice to develop, protect, and enforce brands in both the United States and abroad. He also provides effective guidance on copyrights, creative review, FTC compliance, licensing, and dispute resolution to companies ranging from start-ups to multi-billion dollar international corporations.

As part of his dispute resolution practice, Anuj regularly appears in state and federal courts throughout the country in complex commercial and intellectual property litigation matters, and also handles cross border litigation matters. He is also well versed in leading and coordinating inter partes trademark proceedings worldwide, including trademark opposition and cancellation proceedings, before the United States Patent and Trademark Office (USPTO).

Anuj is a co-chair of the firm’s Diversity Committee and is fluent in Hindi and Gujarati. As a longstanding member of the International Trademark Association (INTA), he often serves on its committees and regularly presents at INTA events.

Related Industries

Experience

Leading representation of global specialty vinyl manufacturer in lawsuit and TTAB cancellation proceeding brought under the Lanham Act and related state laws against unauthorized reseller Defendants who have engaged in trademark infringement and false advertising by, among other things, incorporating our client’s mark into their own federally registered mark.

Obtained summary judgment in defense and favor of renowned entertainer against complaint for trademark infringement in federal court, resulting in permanent injunction against plaintiffs. The district court’s decision was affirmed on appeal to the Fifth Circuit Court of Appeals (2017 WL 2954398) and the Supreme Court denied petition for a writ of certiorari.

Representing German paper manufacturer in defense of patent inventorship dispute pending in federal court in the US, and involving concurrent proceedings in Germany and the EU, brought by a US supersonic drying equipment manufacturer.

Responsible for leading negotiation of multi-million dollar technology agreements against Fortune 100 companies for global software and cloud services vendor.

Represented pharmacy health information provider in successfully defeating emergency TRO proceedings brought by competitor in federal court for alleged trade secret misappropriation, which result was followed by prompt dismissal of all claims in suit.

Successfully defeated emergency TRO proceedings brought by competitor against pharmacy health information technology provider in federal court for alleged trade secret misappropriation, which result was followed by prompt dismissal of all claims in suit.

Led the defense and favorable resolution of global trademark infringement dispute and related opposition/cancellation proceedings brought by fashion house against personal care products manufacturer.

Supported successful settlement of long-standing multi-million dollar breach of contract dispute on behalf of national healthcare analytics technology company and its former telecommunications vendor. The representation required an understanding of and evaluating the deficiencies in the sophisticated telecom services contracted.

Responsible for managing day to day coordination and enforcement of large worldwide trademark portfolios of several commercial and consumer products companies, including leading all litigation and inter partes proceedings that arise.

Represented national employee benefits service provider in connection with class action data breach lawsuit with early case evaluation and comprehensive dismissal strategy.

Successfully advocated for e-discovery cost shifting and award of attorneys’ fees in opposition to burdensome third party discovery and forensic investigation in underlying breach of contract litigation, inducing settlement of the litigation.

Employed a sophisticated data relationship tool on behalf of a client to efficiently review and locate highly relevant documents from a million-page plus document production to aid in fast-paced discovery in a case where client faced budget constraints that prevented more comprehensive document review procedures.

Successfully defended medical device manufacturer in federal court bench trial against a claim for more than $10 million based on an alleged breach of license. Unlike a typical breach of contract claim, the issues in this case required proving patent non-infringement and tendering expert testimony in a niche area of x-ray technology. Anuj also handled and successfully defeated an appeal of the judgment before the Eleventh Circuit and Florida Supreme Court.

Served as technology counsel for two Georgia state agencies in successful settlement of a multimillion dollar breach of contract lawsuit brought following an unsuccessful software implementation by a software vendor. Discovery in this case presented complex issues surrounding high-volume discovery, as well as the expert review of software code and tools integral to the software implementation.

Supported successful settlement of claims of trade dress infringement and unfair competition under the Lanham Act brought against a pharmaceutical company by a competitor. This case involved the unique and rarely litigated issue of whether the appearance of pharmaceutical pills and capsules are protectable as trade dress.

Obtained favorable settlement for a marine products company in its Lanham Act lawsuit against a competitor using website Meta tags and Google AdWords infringing the company’s trademarks.

Brought and successfully settled breach of contract lawsuit between regional healthcare practice and global healthcare software vendor. The issues in this case required a deep familiarity with technology implementations and the reasons that they may fail.

Leads and coordinates inter partes trademark proceedings worldwide, including trademark opposition and cancellation proceedings, before the United States Patent and Trademark Office (USPTO).

Represented and helped obtain a multi-million dollar judgment, inclusive of punitive damages and attorneys’ fees, on behalf of South American food company in lawsuit for fraud and rescission. The lawsuit involved complex discovery involving international logistics and foreign entities in numerous countries.

Successfully defended apparel company in federal trademark infringement and counterfeiting lawsuit brought by a Pan-Hellenic sorority organization based on alleged breach of trademark license agreement.

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